Kyle G. Joseph et al.

Patent Trials and Appeals Board

Sep 6, 2019

13618492 - (D) (P.T.A.B. Sep. 6, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/618,492 09/14/2012 Kyle G. Joseph 1048-152 3051
80360 7590 09/06/2019
Bainwood, Huang & Associates, LLC
2 Connector Road
Westborough, MA 01581
EXAMINER
GRIFFIN, TAMARA JEAN
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
09/06/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KYLE G. JOSEPH and SAMUEL J. CURRY1
________________

Appeal 2018-002315
Application 13/618,492
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 7–9, 13–15, 19, 20, and 22–33, which are all
of the pending claims. App. Br. 2. These claims stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Action mailed March 29, 2017 (“Final Act.”) 2. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies EMC IP Holding Company LLC as the real party in
interest. Appeal Brief filed September 14, 2017 (“App. Br.”) 2.
Appeal 2018-002315
Application 13/618,492

2
THE INVENTION
Appellant describes the present invention as follows:
An authentication method and system provides a
technique for authenticating a user [by] using data extracted from
a social network. A graph is created where nodes represent
individuals the user has a direct social connection that are greater
than a predetermined social weigh[t]. Nodes from the graph are
chosen where the distance between the chosen nodes is greater
than a predetermined distance. Pictorial questions including a
valid picture and invalid pictures are formed by randomly
choosing individuals from the chosen nodes.
Abstract.
Independent claim 1 illustrates the claimed invention. It is reproduced
below with formatting modified for clarity and with emphasis added to the
claim language that recites more than an abstract idea:
1. A method of authenticating a user from data in a social
network, the method comprising:
[i] creating a graph, the graph including nodes and edges,
each node representing an individual in the social network
having a direct social connection with the user, each edge created
where a direct social connection exists between the individual
represented by each node and each individual represented by
other nodes of the graph;
[ii] removing from the graph any edge and a corresponding
node representing an individual where the edge is connected to a
node representing the user and a social interaction weight of the
edge is below a predetermined social interaction weight;
[iii] removing from the graph the edges connected to the node
representing the user and the node representing the user;
[iv] after removing the edges connected to the node
representing the user and the node representing the user from the
graph, selecting nodes from the graph to form a set of nodes and
for each selected node removing all nodes adjacent to the
Appeal 2018-002315
Application 13/618,492

3
selected node and an edge connecting the selected node to the
adjacent node;
[v] for each node of the set of nodes, displaying a display
window asking a question based on data from the social network
regarding the individual represented by the node, wherein
displaying the display window asking the question based on data
from the social network regarding the individual represented by
the node includes a) extracting a picture of the individual
represented by the node from the social network, and
b) displaying the picture of the individual as a clickable object
within the display window, wherein the picture of the individual
represents a correct response to the question;
[vi] authenticating the user based on the user’s response to the
questions;
[vii] wherein selecting nodes from the graph to form a set of
nodes includes selecting a number of nodes equal to a number of
questions required to positively authenticate the user;
[viii] wherein displaying the display window asking the
question based on data from the social network regarding the
individual represented by the node further includes displaying
the question based on data from the social network regarding the
individual represented by the node within the display window
asking the question;
[ix] wherein displaying the display window asking the
question further includes displaying images of individuals in
the social network with a similar demographic as the individual
represented by the node as clickable objects in the display
window, as incorrect answers to the question; and
[x] in response to receipt of a user selection of one of the
images of individuals in the social network displayed as incorrect
answers to the question, selecting an additional node from the
graph and displaying a display window asking an additional
question based on data from the social network regarding the
individual represented by the additional node.

Appeal 2018-002315
Application 13/618,492

4
PRINCIPLES OF LAW
A. SECTION 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
Appeal 2018-002315
Application 13/618,492

5
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, . . . and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Appeal 2018-002315
Application 13/618,492

6
B. USPTO SECTION 101 GUIDANCE
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019
Guidance, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
84 Fed. Reg. at 56.

Appeal 2018-002315
Application 13/618,492

7
THE REJECTION AND CONTENTIONS
The Examiner notes that the claims recite “authenticating . . . user[s]
by testing their knowledge of their friends.” Final Act. 3. The Examiner
determines that this abstract idea can be characterized, for example, as either
of the following abstract ideas: an idea unto itself or a mental process that
can be performed either in the human mind of by a human with pen and
paper. Id. at 4.
The Examiner also determines that “the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because” the additional elements beyond the abstract
idea are generic computers performing generic computer functions. Id. at 5
(emphasis omitted). According to the Examiner, the recited general purpose
computing equipment comprised well understood, routine, and conventional
structures known to the industry and processing instructions in a
conventional manner known in the art. Id. The Examiner further concludes
that “[v]iewing the limitations as an ordered combination does not add
anything further than looking at the limitations individually.” Id. at 7.
Appellant argues generally, inter alia,
First, the independent claims are each focused on a specific
improvement to computer functionality. Second, the Examiner
has oversimplified the independent claims by disregarding
significant technical features of the express claim language.
Third, the independent claims improve the performance of the
underlying computer. Fourth, the independent claims are
directed to a specialized machine.
App. Br. 7.
Appellant more specifically argues that
[a]s a result of the wide availability of such text search engine
technology, previous devices that performed authentication
Appeal 2018-002315
Application 13/618,492

8
simply by asking questions regarding friends in a social network
and then accepting text answers could easily be compromised
based on text information obtained using an internet search
engine, causing high numbers of false positive errors.
Id. at 8 (citing Spec. 2:4–6).
Appellant continues,
[i]n order to respond to the ease with which previous text based
authentication systems can be compromised due to the
availability of common internet search engines, and in order to
reduce the number of false positive errors occurring while
performing text based authentication that are caused by the
malicious use of such internet search engines, the claimed
invention extracts, from a social network, a picture of an
individual who is strongly related to the user who is being
authenticated, and then displays the picture in a graphical user
interface as a correct response to a challenge question. Using a
picture to represent the correct answer prevents attackers from
simply determining the correct answer by performing a text
search, and thereby effectively reduces the number of false
positive errors made during the authentication process.
Id. (emphasis added).

ANALYSIS
Step 2A, Prong 1
We agree with the Examiner that the appealed claims recite a protocol
of “authenticating . . . user[s] by testing their knowledge of their friends.”
Final Act. 3. We further agree that the protocol reasonably can be
characterized as a mental process that can be performed either in the human
mind of by a human with pen and paper. Id. at 4.
Limitation [i] of claim 1, for example, includes the following
language:
Appeal 2018-002315
Application 13/618,492

9
[i] creating a graph, the graph including nodes and edges,
each node representing an individual in the social network
having a direct social connection with the user, each edge created
where a direct social connection exists between the individual
represented by each node and each individual represented by
other nodes of the graph;
Prior to the advent of the Internet, it was common for police
departments (at least in the movies) to mount photographs of victims and
suspects on a large bulletin board or wall. It further was common to attach
strings between the photographs using pushpins or tape to indicate business,
financial, social, or romantic connections between the people appearing in
the photographs. It also was common to have a hub-and-spoke arrangement
of strings wherein plural suspects, witnesses, or victims have common
connections to one central victim or criminal ringleader.
This historically used means of tracking interrelationships among
people reasonably can be characterized as a “graph” of “a social network,”
as those terms are used within the claims. Such a graph includes “nodes”
(photographs of people) and “edges” (strings). In such a pre-Internet graph,
each node represented an individual in the social network having a direct
social connection with another person at the hub of the network, and wherein
each edge was created where a direct social connection existed between the
individual represented by each node and each individual represented by
other nodes of the graph.
Restated, the entire language of limitation [i] recites a method of
mapping personal relationships, and this mapping reasonably can be
characterized as a mental process—observations, evaluations, and judgments
that can be performed in the human mind or with the aid of pencil and paper.
The 2019 Guidance recognizes such mental processes as constituting
Appeal 2018-002315
Application 13/618,492

10
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. As such, we agree with
the Examiner that limitation [i] recites a mental process, which is a
recognized abstract idea.
Limitations [ii] through [iv] recite various steps of removing specified
edges and nodes from the graph. That is, these limitations correspond to the
pre-Internet activities of removing photographs and strings from the police
bulletin board, or on a more primitive scale, erasing pictures and
interconnecting lines that were drawn with a pencil on a piece of paper.
Stated another way, the social network, the graphs, the nodes, the edges, the
social connections, as well as other claim elements (the social interaction
weights, the removal of edges, the random selection of nodes), pertain to
underlying abstract ideas. For example, a node is just an abstract construct
representing a person. Spec. 2 (“each node represents an individual in the
social network having a direct social connection with the user”).
Furthermore, claim 1’s first four method steps—step [i], which recites
creating a graph of nodes and edges, and steps [ii]–[iv], which recite
removing various edges and nodes,—can be performed in the human mind
or by a human with the aid of paper and pencil. For example, a human could
create and organize or cluster nodes representing one’s acquaintances based
on similar demographics: which acquaintances are patent attorneys, which
acquaintances are on one’s sports teams, which acquaintances were in high
school band and orchestra, etc. One could create with pencil and paper,
edges connecting all of the nodes for a person’s friends who know each
other, as recited in limitation [i] of claim 1. Then one could follow the next
three steps of method claim 1’s limitations [ii]–[iv] until one ends up with
four or five acquaintances who do not know each other. After this, one
Appeal 2018-002315
Application 13/618,492

11
could mentally generate and write down questions about each of these
acquaintances, as recited in limitation [v].
As such, limitations [ii] through [iv] also reasonably can be
characterized as reciting observations, evaluations and judgments that can be
performed in the human mind or with the aid of paper and pencil—abstract
ideas recognized by the 2019 Guidance.
Limitations [v] and [vi] recite the following language:
[v] for each node of the set of nodes, displaying a display
window asking a question based on data from the social network
regarding the individual represented by the node, wherein
displaying the display window asking the question based on data
from the social network regarding the individual represented by
the node includes a) extracting a picture of the individual
represented by the node from the social network, and
b) displaying the picture of the individual as a clickable object
within the display window, wherein the picture of the individual
represents a correct response to the question;
[vi] authenticating the user based on the user’s response to the
questions;
App. Br. 14, Claims App’x (emphasis added to indicate the language
reciting additional elements beyond the abstract idea).
Challenge-and-response protocols that entail requesting that a person
answer a question by selecting a correct picture long pre-dated the advent of
the Internet. For example, it was a common practice before the advent of the
Internet for teachers to provide students with a set of pictures on a piece of
paper and verbally direct the student to respond with a non-verbal response
(e.g., “Please circle the picture that is not like the others”). Another
common pre-Internet practice was for police to provide a witness a photo-
array of suspects, to present the witness a word-based challenge (e.g., “Do
you recognize in any of these photographs, the person who committed the
Appeal 2018-002315
Application 13/618,492

12
crime?”), and to direct the witness to respond with a non-verbal response
(e.g., “If so, please point to the photograph of the person that you saw
commit the crime.”)
Such challenge-and-response protocols reasonably can be
characterized as steps of managing interactions between people and, more
specifically, as steps that entail following rules or instructions. The acts of
(1) managing interactions between people and (2) following rules or
instructions are two examples of the abstract idea that the 2019 Guidance
recognizes under the overall category of “[c]ertain methods of organizing
human activity.” 2019 Guidance, 84 Fed. Reg. at 52. The noted claimed
protocol, then, reasonably can be characterized as another abstract idea
recognized by the 2019 Guidance.2
The subsequent claim step of “authenticating the user based on the
user’s response to the questions” reasonably can be characterized as the
mental process of observation, evaluations, or judgment. 2019 Guidance,
84 Fed. Reg. at 52.
To be sure, the noted claim limitations also recite additional elements
beyond the steps of asking word-based challenge questions, receiving

2 The Examiner alternatively characterizes the claimed protocol as testing a
user’s knowledge. The 2019 Guidance does not expressly list “testing” as a
recognized subcategory of methods of organizing human activity. However,
the 2019 Guidance does expressly list “teaching” as a recognized
subcategory (2019 Guidance, 84 Fed. Reg. at 52), and testing is a well-
known mode or means of teaching. Testing also can be characterized
reasonably as an interaction between people that includes following rules or
instructions. As such, the Examiner’s characterization of the invention as a
method of testing reasonably falls within the 2019 Guidance’s list of
recognized sub-categories of certain methods of organizing human activity.
Appeal 2018-002315
Application 13/618,492

13
responses that entail pointing, and making mental determinations about
identity authentication. For example, claim 1 requires that the pictures about
which the user is questioned are displayed on a display window as clickable
objects. However, the existence of these additional claim elements is
addressed appropriately under step 2A, prong 2, and step 2B, if needed. The
existence of additional elements does not negate the fact that the claims
recite steps that are reasonably able to be characterized as abstract ideas.
Limitation [vii] recites “wherein selecting nodes from the graph to
form a set of nodes includes selecting a number of nodes equal to a number
of questions required to positively authenticate the user.” This limitation
merely further narrows the abstract idea of selecting nodes. But the level of
abstraction at which the Examiner describes the invention does not change
the accuracy of the Examiner’s determination that the limitation recites an
abstract idea. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed.
Cir. 2016) (“An abstract idea can generally be described at different levels of
abstraction.”)
Limitations [viii] and [ix]
[viii] wherein displaying the display window asking the
question based on data from the social network regarding the
individual represented by the node further includes displaying
the question based on data from the social network regarding the
individual represented by the node within the display window
asking the question;
[ix] wherein displaying the display window asking the
question further includes displaying images of individuals in
the social network with a similar demographic as the individual
represented by the node as clickable objects in the display
window, as incorrect answers to the question;
Appeal 2018-002315
Application 13/618,492

14
App. Br. 14, Claims App’x (emphasis added to indicate the language
reciting additional elements beyond the abstract idea).
As such, limitation [viii] adds the requirement that the challenge
question about the picture be displayed as text. Writing challenge questions
as text predated the advent of the Internet. For example, grade school
children commonly received work assignments printed on paper where the
students were challenged to select the drawing that is different from the
others. Again, then, providing the challenge question in the form of text is
directed to an abstract idea. The only element beyond the abstract idea is
that the act of displaying the challenge text takes place on a display window.
Similarly, limitation [ix]’s step of providing incorrect answers in the
form of photographs constitutes part of the underlying abstract idea. The
only element beyond the abstract idea is that the act of displaying the
incorrect photographs is carried out in the form of clickable objects in a
display window.
Limitation [x] of claim 1 recites the following language:
[x] in response to receipt of a user selection of one of the
images of individuals in the social network displayed as incorrect
answers to the question, selecting an additional node from the
graph and displaying a display window asking an additional
question based on data from the social network regarding the
individual represented by the additional node.
App. Br. 14, Claims App’x (emphasis added to indicate the language
reciting additional elements beyond the abstract idea).
Limitation [x]’s step of asking new challenge questions when the
initial response is incorrect constitutes a more detailed recitation of the
underlying pictorial-based challenge-and-response abstract idea. Like
limitations [v], [viii], and [ix], the only element beyond the abstract idea is
Appeal 2018-002315
Application 13/618,492

15
that the new challenge photograph and query are displayed in a display
window.
For these reasons, we determine that all ten limitations of claim 1
recite abstract ideas.
Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we analyze whether
any of the additional elements beyond the abstract idea integrate the abstract
ideas into a practical application. 2019 Guidance, 84 Fed. Reg. at 54. In
this regard, Appellant argues that, when viewed as an ordered combination,
the claimed invention improves the functioning of a computer by making
more accurate and secure, authentications of persons because of the
existence of Internet search engine technology:
As a result of the wide availability of such text search engine
technology, previous devices that performed authentication
simply by asking questions regarding friends in a social network
and then accepting text answers could easily be compromised
based on text information obtained using an internet search
engine, causing high numbers of false positive errors. But for the
ubiquitous presence of text search engine technology, there
would in fact be no need for the present invention. In order to
respond to the ease with which previous text based authentication
systems can be compromised due to the availability of common
internet search engines, and in order to reduce the number of
false positive errors occurring while performing text based
authentication that are caused by the malicious use of such
internet search engines, the claimed invention extracts, from a
social network, a picture of an individual who is strongly related
to the user who is being authenticated, and then displays the
picture in a graphical user interface as a correct response to a
challenge question. Using a picture to represent the correct
answer prevents attackers from simply determining the correct
answer by performing a text search, and thereby effectively
Appeal 2018-002315
Application 13/618,492

16
reduces the number of false positive errors made during the
authentication process.

App. Br. 8 (emphasis added).
This argument tracks the explanation of Appellant’s invention, as
explained in the Specification:
A nefarious individual can request the information found in
public records to answer questions likely posed by authentication
systems. Questions about a friend or connection in a social
network can be discovered using text from an internet search
engine query about the person.
In contrast to the above described conventional
authentication system where questions are formed from textual
information, an improved technique involves authenticating a
user by forming a plurality of questions about individuals
answered pictorially who have a strong social connection to the
user and a weak connection to each other in the user’s social
network.
Advantageously, the improved technique provides
questions that cannot be determined from public records or from
simply searching for text about a friend in a social network.
Because individuals or friends are chosen from diverse areas in
the user’s social network, a hacker or impostor cannot easily
make determinations as to which picture in question relates to
the correct individual.
Spec. 2: 3–16 (emphasis added).
Appellant’s argument is unpersuasive. The problem of imposters
searching texts to find personal information that allows them to impersonate
someone else to thwart an authentication challenge is not attributable to the
advent of Internet-search-engine technology. That is, the problem is not
unique or limited to computer environments. Scam artists have been using
publicly available records and other textual information to impersonate
others long before the advent of the Internet.
Appeal 2018-002315
Application 13/618,492

17
Furthermore, long before the advent of the Internet, the advent of the
alphabet, which provides a commonly accepted system for organizing stored
textual information, has made it easier to perform textual-based searches
than pictorial-based searches. That is why pictures in a high-school
yearbook historically have been arranged alphabetically—not by hair color
or head shape. That is why it historically has been more time-consuming to
identify criminals by looking at photographs in a mug book than to identify
them by searching their names.
To be sure, the advent of Internet search engines has made it
immeasurably easier to text search vast amounts of information relative to
doing so manually. However, this does not mean that the problem addressed
by Appellant’s invention is unique to computer technology. In fact, nothing
in claim 1 reasonably limits the claimed process to exclude the gathering of
information from being practiced manually.
Appellant’s inventions, then, reasonably could be characterized as a
first recognition that one abstract idea (text-based authentication challenges)
has an associated problem (the ability of imposters using text searches of
available information to thwart authentication challenges) and a second
recognition that this different form of this abstract idea (pictorial-based
authentication challenges) is less affected by this problem. As such, the
present invention does not provide a solution to a technical problem or
improve the functioning of a computer, a technology, or a technological
field. See MPEP § 2106.05(a) (discussing such technological improvements
as potentially amounting to significantly more than an abstract idea).
Rather, Appellant’s invention entails reducing a problem that is inherent to
Appeal 2018-002315
Application 13/618,492

18
one form of an abstract idea by alternatively practicing a different form of
the abstract idea.
When viewed in this light, the fact that a computer is used to retrieve,
select, and then display photographs as clickable objects does not constitute
an improvement to a computer. Such use of the computer merely entails
relying on a “processor” to “perform routine tasks more quickly or more
accurately[, which] is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); see
also DDR Holdings, LLC v. Hotels.com. L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014) (distinguishing a claimed solution necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks from claims that “merely recite the performance of
some business practice known from the pre-Internet world along with the
requirement to perform it on the Internet”).
Furthermore, Appellant’s Specification indicates that the method of
claim 1 does not even improve, limit, or change the functionality of the
particular computer on which the claimed pictorial-based authentication
protocol is carried out. More specifically, Appellant’s Specification explains
that the invention, as recited in claim 1, can be carried out on an automatic
teller machine (ATM) or a point of sale (POS) terminal. Spec. 1:26–2:11,
5:20–30. Unlike other conventional computer terminals such as personal
computers or mobile devices, which typically included search engines to
allow a user to perform Internet-based text searches, ATMs and POS
terminals typically did not provide such search engines or Internet-search
functionality.
Appeal 2018-002315
Application 13/618,492

19
As such, the invention does not envision overcoming a problem of
functionality associated with the computer terminal on which the invention
is being practiced. Rather, the invention entails carrying out an abstract
idea—a pictorial-based authentication protocol—on one computer terminal
in order to restrict an imposter’s ability to perform a text-based search using
other conventional computers or publicly available paper records to thwart
an authentication challenge.
For these reasons, Appellant has not persuaded us that the additionally
claimed elements, viewed both individually and as an ordered combination,
either improve the functioning of a computer, recite a particular machine or
transformation, or provide any other meaningful limitations. MPEP
§ 2106.05(a)–(c), (e). That is, Appellant does not demonstrate that the
invention integrates that recited abstract ideas of claim 1 into a practical
application within the meaning of the 2019 Guidance.
Step 2B
As noted above, the only claim elements beyond the recited abstract
idea are (1) that the photographs are displayed as clickable objects within a
display window and (2) that textual questions also are displayed in the
display window. Claim 1, limitations [v], [viii]–[x]. The Examiner finds
that these additional elements are not sufficient to amount to significantly
more than an abstract idea under step 2B of the Alice framework because the
additional elements are performed by generic computers performing generic
or general-purpose computer. Final Act. 5–7.

Appeal 2018-002315
Application 13/618,492

20
Appellant’s Specification does not reasonably indicate that at the time
of the invention, there was anything technologically challenging about either
(1) displaying a photograph or picture in the form of a clickable object or
(2) having a user respond to a text prompt by clicking on the clickable
object. See generally Spec. (omitting any indication that Appellant invented
the idea of providing photographs in the form of clickable objects). In fact,
computer users have provided input by clicking on pictures, icons, radio
buttons, or other clickable objects that appear on display screens at least as
long as Microsoft Windows™ has existed.
Conclusion
Appellant has not adequately demonstrated that the Examiner erred in
determining that claim 1 recites one or more abstract ideas, that the claim
fails to integrate the abstract idea into a practical application, or that the
additional claim elements add significantly more to the abstract idea.
Accordingly, Appellant does not persuade us of that the Examiner erred in
concluding that claim 1 is directed to patent-ineligible subject matter.
Accordingly, we affirm the § 101 rejection of independent claim 1.
We also affirm this rejection of claims 2, 3, 7–9, 13–15, 19, 20, and 22–33,
which Appellant does not argue separately. App. Br. 7–13.

DECISION
The Examiner’s decision rejecting claims 1–3, 7–9, 13–15, 19, 20,
and 22–33 is affirmed.

Appeal 2018-002315
Application 13/618,492

21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED